USPTO Patents Application 09872197

AppLNo. 10/112,320

Amdt Dated 7/21/2008

Reply to Office action of 4/21/2008

REMARKS/ARGUMENTS

Claims 1-24 are pending in the present application.

This Amendment is in response to the Office Action mailed April 21, 2008. In the Office
Action, the Examiner rejected claims 1-24 under 35 UJS.C. §103(a).

Reconsideration in light of the remarks made herein is respectfully requested.

Rejection Under 35 U.S.C. §103

In the Office Action, the Examiner rejected claims 1-3, 5-7, 9-11, 13-15, 17-19, and 21-
23 under 35 US.C § 103(a) as being allegedly obvious over U.S. Patent No, 5,867,226A issued
to Wehmeyer et aL (hereinafter Wehmeyer) in view of U.S. Patent No. 6,522,342B1 issued to
Gagnon et aL (hereinafter Gagnon) and even further in view of U.S. Patent No. 6,564 ? 379B1
issued to Knudson et aL (hereinafter Knudson).

Applicant respectfully traverses the rejection and submits that the Examiner has not met
the burden of establishing a prima facie case of obviousness.

To establish a prima facie case of obviousness, three basic criteria must be met. First,
there must be some suggestion or motivation, either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art, to modify the reference or to
combine reference teachings. Second, there must be a reasonable expectation of success.
Finally, the prior art reference (or references when combined) must teach or suggest all the claim
limitations. MPEP §2143 .

The Supreme Court in Graham v. John Deere , 383 U.S. 1, 148 USPQ 459 (1966), stated:
"Under § 103, the scope and content of the prior art are to be determined; differences between
the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject
matter is determined," MPEP 2141 .

In KSR International Co. vs. Teleflex, Inc. , 127 S.Ct. 1727 (2007) (Kennedy, J.), the
Court explained that "[o]ften, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue ." The Court further required that an

Docket No. A0SG7 Page 6 of 11 ETK/npe

Appl.No. 10/112,320

Amdt Dated 7/21/2008

Reply to Office action of4/21/200S

explicit analysis for this reason must be made. "[Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness." KSR, 127 S.Ct. at
1741, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

Further, as is well know in obviousness determinations, impermissible hindsight must be
avoided. MPEP § 2141. To defeat patentability based on obviousness, the suggestion to make
the new product having the claimed characteristics must come from the prior art, not from the
hindsight knowledge of the invention. Interconnect Planning Corp. v. Feil 744 F.2d 1 132, 1 143,
227 USPQ (BNA) 543, 551 (Fed. Cir. 1985). To prevent the use of hindsight based on the
invention to defeat patentability of the invention, this court requires the Examiner to show a
motivation to combine the references that create the case of obviousness. In other words, the
Examiner must show reasons that a skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention, would select the prior elements from
the cited prior references for combination in the manner claimed. In re Rouffet 149 F.3d 1350
(Fed. Cir. 1996), 47 USPQ 2d (BNA) 1453,

Applicant respectfully submits that there is no suggestion or motivation to combine
Wehmeyer, Gagnon, and Knudson, and thus no prima facie case of obviousness has been
adequately established. Further, even if Wehmeyer, Gagnon, and Knudson were properly
combinable, their combination would not teach suggest the limitations of independent claims 1, 9,
and 17.

In the instant case, Applicant respectfully submits that there are significant differences
between the cited Wehmeyer, Gagnon, and Knudson references and the claimed invention and
there is no apparent reason to combine the known elements in the manner as claimed (except for
impermissible hindsight) , and thus a prima facie case of obviousness has not been adequately
established.

Wehmeyer is merely cited because it discloses a set-top box and a program guide.
As admitted by the Examiner, Wehmeyer does not disclose icons as identifiers (Office
Action, page 4). Thus, as the Examiner acknowledges, Wehmeyer does not teach or suggest at
least the elements: (1) displaying an arrangement of a plurality of differen t channel icons
associated with respective video program providers in a plurality of rows and columns
simultaneously on the display device : (2) selecting one of the plurality of different channel icons

Docket No. A0807 Page 7 of 1 1 ETK/npe

Appl.No. 10/112,320

Amdt. Dated 7/21/2008

Reply to Office action of 4/21/2008

in response to the first input; and (3) displaying a pop-up for the selected channel icon on the
display device while still displaying the arrangement of the plurality of different channel icons,
the pop-up overlaying at least one other channel icon ; wherein: (4) the pop-up displays the first
program data associated with the first program of the selected channel icon in response to the
first input and the user interface receives the second input while the pop-up is displaying the first
program data; and (5) the pop-up displays the second program data associated with the second
program of the selected channel icon in response to the second input while the arrangement of
the plurality of different channel icons in the plurality of rows and columns is still displayed and
the pop-up continues to overlay the at least one other channel icon, as recited in claims 1, 9, and
17.

The Examiner then alleges that Gagnon teaches the use of icons as identifiers, citing
Figures 5 and 7 of Gagnon. (Office Action , page 5).

Applicant respectfully disagrees with the Examiner. Applicant respectfully submits that
Gagnon does not teach or suggest channels icons as set forth in independent claims 1, 9, and 17.

Gagnon merely discloses a Best-of-Web data service page (Gagnon, col. 6, lines 35-42;
Figures 5 and 7). Figures 5 and 7 are examples of the Add Selections sub-page 208 and the My
Selections sub-page 206 displays, respectively. The special links segment 186 contains a
plurality of graphics or logos that represent topical or otherwise noteworthy websites that are
mandatory download websites. Mandatory download websites are regularly/periodically
downloaded and stored in the local memory of the user's PC 128 (Gagnon, col. 13, lines 32-41).

In contrast, independent claims 1, 9, and 17 generally recite that the plurality of different
channel icons are associated with respective video program providers. The video program
providers may be a broadcast television networks or cable networks (See Specifications, page 4,
line 24, for further details).

Because website logo 224 of Gagnon represents a website (Gagnon, col. 13, line 65).
Gagnon in no way teach or suggests a channel icon associated with a video program provider.

As to Knudson, Knudson merely discloses a user operating the program guide in either a
browse mode or flip mode by using the cursor keys for browse mode and channel up and down
keys for flip mode (Knudson, col. 7, lines 4-7, Figures 4 and 5), and does not teach or suggest
"selecting one of the plurality of different channel icons in response to the first input," as recited
in the claims.

Docket No. A0807 Page S of 1 1 ETK/npe

AppL No. 10/112,320

Amdt Dated 7/21/2008

Reply to Office action of 4/21/2008

As illustrated in Figures 4 and 5 of Knudson, the browse display 70 contains the program
listing information for the current channel and time and if the user presses a cursor key, the
program listings information in the browse display 70 is changed (Knudson, col 6, lines 33-40).
The browse display 70 is not equivalent to a channel icon.

Icons are on-screen representations which, in the present invention, are associated with
respective video program providers. The browse display 70 providing program listings
information, as illustrated in Figures 4 and 5 of Knudson, is not a channel icon.

As discussed above, the combination of Wehmeyer, Gagnon, and Knudson doesnot
teach or suggest the limitations of independent claims 1, 9, and 17. Further, the proposed
combination of Wehmeyer, in view of Gagnon, and even in further in view of Knudson is
improper.

There are significant differences between the cited references and the claimed invention
as discussed above. Furthermore, the Examiner has not made an explicit analysis on the
apparent reason to combine the known elements in the fashion of the claimed invention and is
relying on impermissible hindsight reconstruction. Accordingly, there is no apparent reason to
combine the teachings of Wehmeyer, in view of Gagnon, and even in further in view of Knudson.

Therefore, Applicant respectfully submits that independent claims 1, 9, and 17 and their
respective dependent claims are distinguishable over the cited prior art references. Accordingly,
Applicant respectfully requests that the rejection under 35 U.S.C. §1 03(a) be withdrawn and that
independent claims 1, 9, and 17, and their respective dependent claims, be allowed and passed to
issuance.

Docket No. AO807

Page 9 of II

ETK/npe

AppL No. 10/112320

Arodt Dated 7/21/2008

Reply to Office action of 4/21/2008

Conclusion

In view of the remarks made above, it is respectfully submitted that pending claims 1-24
are allowable over the prior art of record. Thus, Applicant respectfully submits that all the
pending claims are in condition for allowance, and such action is earnestly solicited at the
earliest possible date. The Examiner is respectfully requested to contact the undersigned by
telephone if it is believed that such contact would further the examination of the present
application. To the extent necessary, a petition for an extension of time under 37 C.RR. is
hereby made, Please charge any shortage in fees in connection with the filing of this paper,
including extension of time fees, to Deposit Account 02-2666 and please credit any excess fees
to such account.

Respectfully submitted,

BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP

Dated: July 21, 2008

Reg. No. 44,188

Tel: (714) 557-3800 (Pacific Coast)

1279 Oakmead Parkway,
Sunnyvale, CA 94085-4040

Docket No, A0807

Page 10 of 11

BTK/npe